Are Unregistered Trademarks Protected Against Infringement? | Legal Articles

 

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Are Unregistered Trademarks Protected Against Infringement?

Trademarks may be registered as per the Trade Marks Act of 1993 (the Act) in South Africa, which forms the legislative basis upon which proprietors may protect their trade marks from unauthorised use. According to the Act, a trade mark ‘means a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.’

Being a mark used for distinction purposes, there ought to be remedies where there is an infringement on the use of the trade mark, by a third party. The Act provides for three instances in Section 34 (1), in which infringement is accepted as having taken place.

Firstly, the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion. Secondly, the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion. Thirdly, the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well-known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception.

A question that often comes up is, are unregistered trademarks legally protected against unauthorised use by third parties?

South Africa has a hybrid legal system, with the Common Law being one of our main sources of law. A claimant may rely on the Common Law, to prove certain principles in order to be successful. The concept of passing-off is used to afford protection or defend a claim relating to unauthorised use of an unregistered trademark.

Passing-off is whereby a trader makes a misrepresentation, either deliberately or through negligence, to the public that his/her trade (business) is that of a competing trader or that the businesses are associated.  The owner (claimant) of the mark will be required, as was held in the case of Adidas AG and Another v Pepkor Retail Ltd (14605/2009) [2011] ZAWCHC, to prove that the mark has become so distinct such that to the public, it has acquired substantial significance in relation to identifying the goods or services of its business. In other words, the claimant must prove the presence of a reputation. Proving a reputation will be dependent upon factors such as sales figures, advertising expenditure to promote the goods or services associated with the mark, the period that the mark has been used by the claimant as well as the uniqueness of the mark amongst others.

It will also be required for the claimant to prove that the use of the mark by the infringing party was meant to deceive and cause confusion amongst the consumers, resulting in actual or probable injury to the reputation of the claimant’s business. Consequently, it is not only actual injury to the trade that needs to be proven, even probable injury is sufficient as was noted in the case of Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd [1977] 4 All SA.

As was noted in the case of Danco Clothing (Pty) Ltd v Nu-Care Marketing and Sales Promotions (Pty) Ltd and Another (675/89) [1991] ZASCA, the onus rests on the claimant to prove that the use of the mark by the infringing party was meant to deceive or cause confusion, on a balance of probabilities.

 

Van Deventer and Van Deventer Incorporated assists with labour law, civil and general litigation, criminal litigation, human rights law, family law matters such as maintenance, divorces, protection orders, Rule 43 applications, Rule 58 applications and others. We also assist in personal injury, company law and deceased estates amidst an array of others. 

 

Please find relevant information from the below blogs: 

https://www.vandeventers.law/Legal-Articles/entryid/2084/what-a-trademark-is-and-what-it-aims-to-protect 

https://www.vandeventers.law/Legal-Articles/entryid/2085/what-to-do-when-your-trademark-is-infringed 

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